Ex Parte Morinville

Patent Trial and Appeal Board

Oct 30, 2017

13244610 (P.T.A.B. Oct. 30, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/244,610 09/25/2011 Paul Morinville IBIG1110-6 5170
42671 7590 10/30/2017
LAW OFFICES OF MARK L. BERRIER
1715 S. Capital of Texas Hwy. Suite 200-E
Suite 200-E
AUSTIN, TX 78746
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
10/30/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL MORINVILLE
____________________

Appeal 2016-004886
Application 13/244,610
Technology Center 3600
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

I. STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”) on September 26, 2017 for reconsideration
of affirmance of the Examiner’s rejections of claims 1–20 in a Decision
mailed July 31, 2017 (hereinafter “Decision”). The Decision affirmed the
rejection of claims 1–20 under 35 U.S.C. § 101; the rejection of claims 1–8,
10–18, and 20 under 35 U.S.C. § 102(e) over Elkin; and the rejection of
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claims 9 and 19 under 35 U.S.C. § 103(a) over the teachings of Elkin and
Kim.
We have reconsidered our Decision regarding the claims in light of
Appellant’s comments in the Request (Req. Reh’g 4–16). We grant the
Rehearing Request to the extent that we consider the Appellant’s arguments
infra, but DENY the request to modify our Decision. We incorporate our
earlier Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).

II. ISSUES
The issues we address in this Request are whether Appellant has
persuasively identified that the Board misapplied the relevant law or
misapprehended Appellant’s arguments set forth in the Appeal Brief in
finding no error with the following:
1. The Examiner’s finding that the claimed method is directed to
ineligible subject matter, wherein the method comprises the steps of a user
“providing input” to a computer, the computer “initiating a management
event,” the management event “initiating one or more transactional events,”
a first transaction event “performing a transaction,” “generating” and
“providing resulting” transactional information, and the management event
“controlling the user’s access” based on the resulting transactional
information (claim 1 ); and
2. The Examiner’s rejection of claim 1 over Elkin, by finding Elkin
teaches a management event “accepting the user input,” and a
“transactional” event initiated by the management event “generating
resulting transactional information” and “providing the resulting
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transactional information to the management event while the management
event remains pending” (id., emphasis added).
III. ANALYSIS
35 U.S.C. § 101
Appellant contends that the Board misapprehended and/or overlooked
the Examiner’s failure to establish a prima facie case of patent ineligibility.
See Req. Reh’g 4. In particular, Appellant argues “the Examiner did not
identify each individual element of claim 1 (or any of the other claims), and
did not identify any ordered combination of claim elements for any of the
claim,” but instead, “considered only 6 of the 132 words in claim 1.” Id. at 5.
Appellant argues “[t]he Examiner’s boilerplate rejection does not amount to
an explanation of why the lone six-word element of claim 1 identified by the
Examiner sets forth a judicial exception.” Id. at 6.
In addition, Appellant argues “the Board misapprehended and/or
overlooked the Examiner’s failure to consider whether the claims solve a
technology-based problem.” Id. at 7. In particular, Appellant argues “the
invention addresses problems that existed in the prior art” wherein the
claims, “when considered as an ordered combination of the claim
limitations, recite particular, practical applications of the methods . . . that
improve the performance of the computers in which they are implemented.”
Id. at 9.
We are not persuaded. The Federal Circuit has repeatedly noted “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Federal Circuit has, thus, held the USPTO carries its procedural burden
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of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is
required is that the Office set forth the statutory basis of the rejection in a
sufficiently articulate and informative manner so as to meet the notice
requirement of § 132. Id.
Here, as set forth in our Decision, we agreed with the Examiner’s
conclusion that the claims are directed to “the abstract idea of completing
execution of a business process.” Decision 6. That is, the claims merely
recite steps of a user “providing input” to a computer, the computer
“initiating a management event,” the management event “initiating one or
more transactional events,” a first transaction event “performing a
transaction,” “generating” and “providing resulting transactional
information,” and the management event “controlling the user’s access”
based on the resulting transactional information (claim 1 ), which are merely
steps directed to “the abstract idea of completing execution of a business
process.” Decision 6.
As we noted in our Decision, our reviewing courts have held
fundamental economic and conventional business practices as being abstract
ideas (Id., citing Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) and Bascom Glob. Internet Svcs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)). Here, we
found that the concept of executing a business process (“initiating” a
management event, “performing” a transaction, and “controlling” access
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based on “resulting transaction information”) is a fundamental business
practice long prevalent in our system of commerce. Id. Thus, we agreed
with the Examiner that completing the execution of a business process is an
“abstract idea” beyond the scope of § 101. Id. citing Alice Corp. Pty. Ltd.,
134 S. Ct. at 2356. Thus, in our Decision, we found that the Examiner has
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner so as to meet the notice requirement of § 132, and,
therefore, has established a prima facie case as to step one of Alice. Id. at 7.
Although Appellant contends that the claims improve the performance
of the computers in which they are implemented.” Req. Reh’g at 9., as we
noted in our Decision, “the relevant question is whether the claims here do
more than simply instruct the practitioner to implement the abstract idea . . .
on a generic computer.” Decision at 6, citing Alice Corp. Pty. Ltd., 134 S.
Ct. at 2359. Here, we concluded that they do not. Id.
As we found in our Decision, taking the claim elements separately,
the function performed by the computer at each step of the process is purely
conventional. Id. That is, “[u]sing a computer to receive user input and
generate information from the user input to provide the resulting information
(to control the user’s access) are the most basic functions of a computer.”
Id. Thus, we agreed with the Examiner conclusion’s that “no more than a
general purpose computer, performing generic computer functions that are
well-understood, routine, and conventional activities previously known to
the pertinent industry is required by the claims” (Id. citing Ans. 5).
As the Examiner finds, “there isn’t any improvement to another
technology or technical field, or the functioning of the computer itself” and
“there are not any meaningful limitations beyond generally linking the
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abstract idea to a particular technological environment” (Ans. 5). Thus, we
agreed with the Examiner that the claims at issue amount to nothing
significantly more than executing a business process using some
unspecified, generic computer, which is not enough to transform an abstract
idea into a patent-eligible invention. Decision 8, citing Alice Corp. Pty. Ltd.,
134 S. Ct. at 2360.
On this record, Appellant has not identified that the Board has
misapplied the relevant law or misapprehended Appellant’s arguments.
35 U.S.C. § 102(e)
Appellants also contend that “the Board misapprehended the
Appellant’s arguments as to the distinctions between the claims and the cited
prior art (Elkin).” Req. Reh’g 10. Appellants contend “[t]here is no
teaching in Elkin that the completed first process somehow reverts to an
incomplete, pending state at a later time.” Id. at 12. Appellants contend
“the claims requires that the management event (the first event) and the
transactional event (the second event) be pending at the same time” wherein
“[t]his is a parallel relationships” rather than “a serial relationship” which
“preclude the serial relationship explicitly taught by Elkin” (Id. at 13).
As we noted in our Decision, we give the claim its broadest
reasonable interpretation consistent with the Specification, but will not read
limitations from the Specification into the claims. Decision 8–9, citing In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) and In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). As we pointed out in
our Decision, the claims merely require a “transactional event” initiated by a
“management event” that generates “resulting transactional information,”
wherein “the resulting transactional information” is provided to the
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management event while the management event remains pending (Decision
9, citing claim 1). Given the broadest reasonable interpretation of the
claims, we concluded the claims merely require a “management event” that
comprises any event that initiates a transactional event and then receives the
resulting transactional information (id.). That is, contrary to Appellant’s
contention that the claims “preclude the serial relationship explicitly taught
by Elkin” (Req. Reh’g 13), nothing in the claims precludes a “management
event” that initiates a transactional event and then receives the resulting
transactional information in a serial relationship.
Although Appellant contends that “[t]here is no teaching in Elkin that
the completed first process somehow reverts to an incomplete, pending state
at a later time” (Req. Reh’g. 12), the claims do not require that the a
completed process “reverts” back to “an incomplete, pending state at a later
time.” (See claim 1). As we noted in our Decision, nothing in the claims
requires that the “management event” be interpreted to be the completed
process 102 of Elkin (Decision 9) which is then reverted to an incomplete
pending state. Instead, the claims merely require that a transactional event
initiated by the management event provides the resulting information to the
pending (not completed) management event.
As we found in our Decision, Elkin discloses a control flow model
which, upon receipt of a user input, triggers the claim handling process, and
the result is provided back to the control flow model to trigger further
processes (id. at 10). Thus, we agreed with the Examiner’s finding that
Elkin’s control flow model comprises multiple actions and results, wherein
the results of one process is connected to the action of another process in the
flow (Id. citing Ans. 6). We agreed that, in Elkin, the same control flow
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model both triggers the transactional event and then receives the resulting
information for further pending processes (id.). As the Examiner points out,
the process result being provided to the rest of the control flow model in
Elkin “is the same concept described in Appellant’s specification” in
describing a “management element” that is “still pending” (id.).
Based on the record before us, we were unpersuaded the Examiner
erred in finding Elkin teaches the contested limitations. Id. Thus,
Appellant’s Request does not persuade us of any points we misapprehended
or overlooked in the Decision.
On this record, Appellant has not identified that the Board has
misapplied the relevant law or misapprehended Appellant’s arguments.

V. CONCLUSION AND DECISION
We have considered the arguments raised by Appellant in the Request
for Rehearing. Although we have considered our prior Decision in light of
the Request for Rehearing, we decline to modify our prior Decision in any
respect.
We therefore maintain our affirmance of the Examiner’s rejections of
claims 1–20.

REHEARING DENIED